Oy Halva Ab (Halva), founded in 1931, is a well-known confectionery manufacturer in Finland. Its specialty are extruded licorice sweets. One of its most popular products is a licorice carpet. In Halva's own words, "the product that is a result of relentless research and development work is known not only for its great taste but also for its unique shape and the three separate layers of liquorice, that you can enjoy one at a time". According to Halva, the product has been in its catalog since 1951.
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| Halva's licorice carpet. Application no. T201103700. |
In 2011, Halva applied to register the licorice carpet as a three-dimensional trademark in class 30 for a wide range of goods such as coffee, tea, cocoa, sugar, rice, bread, ice creams, salt, mustard and ice. The Patent and Registration Office (PRH) denied the registration (decision 18 July 2012) because the shape was devoid of any distinctive character under section 13 of the Trademarks Act (7/1964). Halva appealed to the Market Court and in its appeal, it specified that it is seeking registration in class 30 only for licorice.
Now it was up to the Market Court (decision 4 April 2014, No. 216/14) to decide whether the licorice carpet is registrable. Before arriving at its conclusion, the Court started its analysis under the section 13 of the Trademarks Act.
The article provides that:
"a trademark must be capable of distinguishing its proprietor's goods from those of others. A mark that denotes either alone or with only few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods shall not, as such, be regarded as distinctive. Neither shall a mark be regarded as distinctive, if it is solely composed of a form that is characteristic of the goods, necessary for achieving a technical result or that substantially increases the value of the goods. In assessing whether a trademark possesses distinguishing power, all the factual circumstances shall be borne in mind, particularly the length of time and extent to which the mark has been used."The court referred to case-law and stated that the criteria of assessing the distinctiveness of shape marks is no different from those for assessing the distinctiveness of other categories of mark. On the other hand, according to the Court, the consumers are not used to perceive the shape of the product as an indication of the origin. Licorice sweets can be categorized as consumer goods and the average consumer does not always pay attention to the shape of these sweets. The Court ruled that the shape of the licorice carpet is not distinctive enough in order to be capable of distinguishing its proprietor's goods from those of others.
Therefore, the licorice carpet is registrable only if it has acquired distinctiveness through use.
Halva had provided evidence that it had produced carpet look-alike licorice for several decades. The Court ruled that this fact alone did not show that the licorice carpet had a distinctive character amongst a significant proportion of the relevant public.
Halva had also provided statements from retailers. According to those statements, the licorice carpet had acquired distinctiveness in Finland. The Court was not convinced and ruled that these statements are not sufficient because the distinctiveness should be judged through the eyes of the average consumer of the goods.
Halva was not ready to give up and appealed to the Supreme Administrative Court. The Court issued its decision (2519/2016) on 6 June.
The Court agreed with PRH and the Market Court and ruled that the shape of the licorice carpet itself is devoid of any distinctive character. After that, it was still necessary to assess whether the licorice carpet had acquired distinctiveness through use.
This time Halva was ready to provide a market survey as an additional evidence of acquired distinctiveness. According to the market survey, 78 % of the respondents (in total, the survey had 427 respondents) recognized the showed licorice product and 64 % (273 respondents) connected it with some company or product name. From those 273 respondents, as much as 65 % connected the product with Halva. Also 3 % of all respondents mentioned a name 'Lakritsimatto' or 'Lakumatto' (both words mean licorice carpet in Finnish and Halva has registered both of them as word marks in the Finnish trademark register) without mentioning Halva. Therefore, the spontaneous (or unaided) awareness was high.
Moreover, out of 427 respondents 61 were unsure whether they connect the product with some company or product name. From those 61 respondents, 62 % connected the product with Halva i.e. they chose Halva from a list that also had other big licorice sweet producers such as Fazer, Panda, Cloetta/Malaco and Kouvolan lakritsi. Therefore, the prompted (or aided) awareness was also relatively high.
The Court paid attention to the fact that the market survey had been done in December 2013. This was two years after Halva had applied to register the licorice carpet as a trademark. The Court ruled, however, that the market survey was valid because the licorice carpet had been in use for a long time and there was no reason to assume that any significant changes had occurred in the reputation of the mark.
The Court concluded that the market survey, as an additional evidence, showed that the licorice carpet is widely recognized by the general consuming public. Therefore, the mark had acquired distinctiveness through use under section 13 of the Trademarks Act. The Court reversed the earlier decisions and the case was sent back to PRH for the registration of the applied mark.
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